adr

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Case No. D2012-0438

1. The Parties

The Complainant is Autodesk, Inc., of San Rafael, California, United States of America, represented by Donahue Gallagher Woods LLP, United States of America.

The Respondent is Transure Enterprise Ltd, Host Master, of Tortola, British Virgin Islands of the United Kingdom of Great Britain and Northern Ireland, and Above.com Domain Privacy, of Beaumaris, Victoria, Australia.

2. The Domain Name and Registrar

The disputed domain name <studentautocad.com> is registered with Above.com, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 6, 2012. On March 6, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 7, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 8, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 14, 2012.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 14, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 3, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 4, 2012.

The Center appointed Marilena Comanescu as the sole panelist in this matter on April 18, 2012. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

The Complainant filed initially the Complaint against Above.com Domain Privacy, of Beaumaris, Victoria, Australia, the registrant as identified in WhoIs at the time of filing the Complaint with the Center. As indicated earlier, after the Registrar disclosed the underlying registrant and contact information for the disputed domain name – which differed from the originally named Respondent – according to its standard procedure, the Center invited the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 14, 2012, requesting that this administrative proceeding is conducted against both the initially named Respondent and the entity confirmed by the Registrar as the Registrant of the disputed domain name, Transure Enterprise Ltd, Host Master, of Tortola, British Virgin Islands of the United Kingdom of Great Britain and Northern Ireland. Accordingly, the Panel shall treat both of them, jointly, as the Respondent.

4. Factual Background

The Complainant is a corporation registered in the United States of America, with its principal place of business in California. For nearly three decades it has marketed computer software programs, associated user manuals, and related documentation under the AUTOCAD trademark.

The Complainant’s AUTOCAD mark is protected in more than 70 jurisdictions around the globe in connection with software products, including in the European Union (since July 24, 2006) and in the United States of America (since January 29, 1985).

The Complainant also claims common law rights in the AUTOCAD trademark, asserting that it has continuously used the trademark in commerce since at least February 1983. The Complainant sells licenses all over the world for its various software products marketed under the AUTOCAD trademark, and it has spent millions of dollars advertising and promoting its trademark worldwide. According to the Complainant, there are more than 9 million users of its products and it is working with approximately 1,700 channel partners, 3,300 development partners, and 2,000 authorized training centers to assist its customers with their worldwide use of its products known by names that incorporate the AUTOCAD trademark and/or that include the mark in the product packaging.

The Complainant produces academic versions of Autocad software available to qualifying students and teachers and qualifies such product as student version of its software Autocad. Also, the Complainant maintains websites for students, named by the Complainant the “Autodesk Student Center Webpages”.

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are given in the present case, as follows:

(i) The disputed domain name <studentautocad.com> is confusingly similar to its trademark AUTOCAD:

The Complainant owns registrations for AUTOCAD trademark in more than 70 jurisdictions worldwide. The Complainant has been using continuously and extensively its trademark since approximately 1983 for various software products.

The disputed domain name is confusingly similar to the Complainant’s trademark as it incorporates the famous AUTOCAD trademark together with the prefix “student”. The Complainant produces student versions of software products marked AUTOCAD and maintains student web pages. Accordingly, the word “student” appended to the inherently distinctive, world famous AUTOCAD trademark indicates a connection between the disputed domain name and the Complainant’s student versions of Autocad software.

The Respondent choose the prefix simply to trade improperly off the fame of the Complainant’s mark and to divert consumers looking for information related to student version of Autocad software or the Complainant’s web pages dedicated to students to advertisements for the Respondent’s website.

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name:

The Complainant made a prima facie showing of this element therefore the Respondent must rebut its showings by producing conclusive evidence to the contrary. The Respondent does not fall under any of the circumstances listed by paragraph 4(c) of the Policy.

The Complainant has never authorized the Respondent to incorporate its AUTOCAD trademark in the disputed domain name or to use it in connection with distributing any products, is not affiliated with, and has never endorsed or sponsored the Respondent’s website to which the disputed domain name resolves.

The Respondent knew or should have known about the Complainant’s trademark at the time it registered the disputed domain name as AUTOCAD is a famous trademark used around the globe for more than a quarter century. Furthermore, the disputed domain name resolves to a website displaying sponsored links marketing goods related to software, inter alia, products of the Complainant’s competitors. Thus, the incorporation of the Complainant’s mark in the disputed domain name was done with intent to misleadingly divert consumers looking for the Complainant’s products for students.

The Respondent cannot avail itself from the fair use doctrine by any occasional display on the website corresponding to the disputed domain name of advertisements with links promoting legitimate copies of the Complainant’s products.

(iii) The disputed domain name was registered and is being used in bad faith:

The Respondent had registered the disputed domain name decades after the Complainant began obtaining its registered and common law rights in the AUTOCAD trademark. The AUTOCAD trademark is famous worldwide. The addition of word “student” further confirms to the Complainant that the Respondent was familiar with its trademark and corresponding products as it confuses Internet users looking for its student versions of Autocad product or corresponding web pages.

The disputed domain name has been used to intentionally attempt to attract, for commercial gain, Internet users seeking information on the Complainant’s goods to a website without content of its own that provides links to commercial websites of third parties, including competitors of the Complainant.

The registration of the disputed domain name is a clear case of opportunistic bad faith due to its obvious connection with the Complainant’s fame and its software products, including the student version of Autocad goods.

The initial Respondent revealed by the search in the WhoIs database did not respond to the Complainant’s three cease and desist letters sent prior to commencing the present proceeding.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

In accordance with paragraph 4(a) of the Policy, the Complainant must prove to the Panel that the following three circumstances are cumulatively met in order to obtain the transfer of the disputed domain name:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent does not have rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used by the Respondent in bad faith.

The Respondent’s failure to respond does not automatically result in a decision in favor of the Complainant, the latter must establish each of the three elements provided by paragraph 4(a) of the Policy, above listed.

Consequently, the Panel shall further analyze the eventual concurrence of these circumstances in the present case.

A. Identical or Confusingly Similar

There are two requirements that a complainant must establish under this element, namely: that it has rights in a trademark, and, if so, that the disputed domain name is identical or confusingly similar to its mark.

The Complainant has rights in the AUTOCAD trademark, holding numerous registrations worldwide.

The dominant part of the disputed domain name contains the Complainant’s trademark in its entirety. In addition to this, the disputed domain name contains the generic word “student” which designates a category of consumers for the Complainant’s products as the AUTOCAD software products are also targeting this academic group formed of students and teachers.

Numerous UDRP panels have considered that the addition of generic or descriptive words to trademarks in a domain name is not sufficient to escape the finding of confusing similarity and does not change the overall impression of the domain name as being connected to the complainant’s trademark (see Telstra Corporation Limited v. Peter Lombardo, Marino Sussich and Ray Landers,WIPO Case No. D2000-1511; Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil,
WIPO Case No. D2000-1409; Sanofi-aventis v. One Star Global,
WIPO Case No. D2006-0583).

Therefore, an Internet user would most probably assume a connection with the Complainant when seeking information on a website operated under the disputed domain name <studentautocad.com>.

It is well established in decisions under the UDRP that presence or absence of characters (e.g. dots, hyphens) in a domain name and indicators for Top Level Domains (e.g. “.com”, “.info”, “.net”, “.org”) may be disregarded when considering the confusing similarity between a trademark and a domain name.

For all the above, the Panel finds that the disputed domain name <studentautocad.com> is confusingly similar to the Complainant’s AUTOCAD trademark.

Accordingly, the Panel finds that the first element of the Policy is established, and the Complainant has proven that the disputed domain name is confusingly similar to its trademark, pursuant to the Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Complainant has provided a prima facie case under this element of the Policy showing that it has had no relationship with the Respondent and has not granted the Respondent any right to register and use its AUTOCAD trademark. Therefore, in line with the UDRP precedents, the burden of production on this element shifts to the Respondent to demonstrate its rights or legitimate interests in the disputed domain name.

The Respondent failed to submit any response in the present procedure and did not react to the Complainant’s cease and desist letters, which were sent prior to commencing the present proceeding. The silence of the Respondent may support a finding, based on other relevant circumstances, that it has no rights or legitimate interests in respect of the disputed domain name. See also Alcoholics Anonymous World Services, Inc. v. Lauren Raymond,
WIPO Case No. D2000-0007; Ronson Plc v. Unimetal Sanayi ve Tic.A.S., WIPO Case No. D2000-0011.

Further, there is no evidence before the Panel to suggest that the Respondent has made a bona fide use of the disputed domain name, or has been known by this disputed domain name, or is making any legitimate noncommercial or fair use of the disputed domain name.

In fact, at the time of filing the Complaint, the Respondent was using the disputed domain name containing the Complainant’s famous trademark in the software industry in connection to a link farm, a website offering sponsored links for the sale of goods related to software containing, inter alia, products of the Complainant’s competitors. The pay-per-click (PPC) website would not normally fall within the bona fide use principles where such websites seek to take unfair advantage of the value of a trademark (See also Shon Harris v. www.shonharris.com c/o Whois Identity Shield,
WIPO Case No. D2007-0997 and Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,
WIPO Case No. D2002-0787).

The fact that the Respondent was sporadically advertising links to legitimate products of the Complainant on the webpage corresponding to the disputed domain name is not a good faith use, as indeed it may “constitute deceptive bait and switch advertising practices”, as mentioned by the panel in the case cited in the Complaint, Asian World of Martial Arts Inc. v. Texas International Prop. Assocs.,
WIPO Case No. D2007-1415.

Such situation also raises the question as to whether the Respondent was the one actually responsible for the choice of links displayed on its website. In line with the previous panel, in Shaw Industries Group Inc. Columbia Insurance Company v. Adminstrator, Domain,
WIPO Case No. D2007-0583, this Panel also agrees “that it is legitimate to infer that the Respondent has some involvement and control over the selection process in the absence of any assertion or evidence to the contrary”.

Further, the Panel agrees that a registrant may have legitimate reasons to use a privacy service. On the other hand it may do so in an attempt to evade contact in the event of a domain name dispute (see also TDS Telecommunications Corporation v. Registrant [20758] Nevis Domains and Registrant [117460] Moniker Privacy Services,WIPO Case No. D2006-1620; CCM IP S.A. v. Traverito Traverito,
WIPO Case No. D2007-0542). Here, along with the rest of the evidence before the Panel, such use falls most likely in the second hypothesis.

For all these reasons, the Panel finds that the second element of the Policy is established, and the Respondent has no rights or legitimate interests in respect of the disputed domain name, pursuant to the Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires proof of bad faith in both the registration and use of the disputed domain name.

When assessing the bad faith in the registration requirement, the following should be considered (1) whether the Respondent knew of the Complainant and its trademark, and (2) whether the Respondent targeted the Complainant to benefit from confusion generated by the similarity between the disputed domain name and the trademark (see Avon Products, Inc. v. Mary Ultes,
WIPO Case No. D2009-0471).

The Complainant’s AUTOCAD trademark is protected in more than 70 jurisdictions worldwide and it has been extensively used since 1983.

The disputed domain name <studentautocad.com> was created in March 2008 and incorporates the Complainant’s trademark in its entirety and the word “student” which describes a specific category of consumers targeted by the Complainant as the Complainant produces dedicated software programs and maintains web pages designed for students and teachers.

Also given the history of precedents involving the Respondent Transure Enterprise Ltd, the inevitable inference is that the Respondent must have known the Complainant’s trademark and products at the time it chose and registered the disputed domain name and that the Respondent targeted the Complainant to benefit from confusion generated by the similarity between the disputed domain name and the AUTOCAD trademark and specific products associated with this mark.

Further, the Respondent is using the Complainant’s trademark for a web portal, the classic method to generate financial gain via the pay-per-click or click-through device. The way in which many of these services operate is to provide the domain name registrant with part of the “click through” revenues that are generated when an Internet user clicks on a hyperlink on the website operating from that domain name.

Paragraph 4(b)(iv) of the Policy provides that the use of a domain name to intentionally attempt “to attract, for commercial gain, Internet users to [the respondent’s] website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location” is evidence of bad faith.

Given the fact that the disputed domain name completely incorporates the Complainant’s well-known trademark along with the term “student” which reflects a category of consumers for the Complainant’s goods, and that the website displays links to goods related to the Complainant’s products, indeed in this Panel’s view, an Internet user accessing the website corresponding to the disputed domain name may be confused and believe that it is a website held, controlled by the Complainant, or somehow affiliated or related to it. In this way, the Respondent is obtaining commercial gain by diverting Internet users searching for the Complainant and, in the same time, is disrupting the business of the Complainant by diverting its potential consumers to websites containing products of the Complainant’s competitors.

In addition, paragraph 4(b)(ii) of the Policy lists the situation when the Respondent has registered the disputed domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct. Paragraph 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) explains that a pattern of conduct can involve multiple UDRP cases with similar fact situations. Here, the Respondent Transure Enterprise Ltd has been involved in another eighty-one (81) UDRP cases identified by the Panel using the Center’s search database1. Most of these cases were similar situations: domain names incorporating third parties trademarks used in connection to link farms displaying goods and services in direct competition with the trademark holders. In the view of the Panel, this is further overwhelming evidence of bad faith on the part of the Respondent (See Kahn Lucas Lancaster, Inc. v. Marketing Total S.A.,
WIPO Case No. D2007-1236 and General Electric Company v. Marketing Total S.A.,WIPO Case No. D2007-1834).

The Respondent chose not to participate in these proceedings, did not react to the Complainant’s letters sent prior to commencing these procedures, has not contested any of the allegations made by the Complainant, and did not provide any evidence whatsoever of any legitimate noncommercial, or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or tarnish the Complainant’s trademark and therefore reinforces this approach. See also Kabushiki Kaisha Toshiba v. Shan Computers,
WIPO Case No. D2000-0325.

For all these reasons, the Panel finds that the third element of the Policy is established on the record in these proceedings, and accordingly that the disputed domain name was registered and is being used in bad faith, pursuant to the Policy, paragraph 4(a)(iii).

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <studentautocad.com> be transferred to the Complainant.

Marilena ComanescuSole PanelistDated: April 26, 2012

1 See “http://www.wipo.int/amc/en/domains/statistics/filing_party.jsp”